Got a trademark warning from a multinational today :(

[happy_martin]

Hi,

I'm curious to know if a trademark needs to be registered in every country. The company which contacted me claim to have trademarked it worldwide but I doubt they have done this in the country I'm conducting my business.

Things have begun quite cordially but they are requesting I transfer everything to them without discussion so I'm taking a bit of time to evaluate my options.

The two things they mentioned are that ..

1) I'm using their logo on my site
2) I'm making money from the site based on their trademark

I've asked them to help find a solution whereby I retain ownership of the domain but convert it to a not-for-profit site, remove their logo and add a disclaimer to it.

Do you think I could end up getting myself into trouble with this suggestion? Ideally I'd like for them to buy the domain from me but I'm waiting on them to suggest it forst.

Best wishes,

Martin

 

[Theo]

Remove the logo and change the focus of the site.

 

[domaingenius]

I think that if they want to they could take a TM action against you and changing the website now will make no difference to it. If they are on the ball they will have made a copy of your website with their logo on it and can take the domain. Put yourself in their position. If you had a TM and someone blatantly used your TM and logo what would you do ?. Yes so would I. At end of day it depends whether it is clearly their trademark or whether it is ambiguous. Even if you are located in Timbucktoo if it is a .com then they can easily take UDRP.

DG

 

[DNQuest.com]

The two things they mentioned are that ..

1) I'm using their logo on my site
2) I'm making money from the site based on their trademark

I've asked them to help find a solution whereby I retain ownership of the domain but convert it to a not-for-profit site, remove their logo and add a disclaimer to it.

Sorry to say this, but the above sinks you here. You already used it in bad faith.

 

[Dale Hubbard]

Ohhh - do yourself a huge favour and hand it back 'without prejudice'. Make sure that they agree not to pursue the matter any further after you've given it to them. Then breathe a sigh of relief.

 

[happy_martin]

Thanks guys I appreciate the opinions here.

The site make very little money so yeah, i'd not lose much if I transferred to them, although I'm holding out to see if they'll offer me something first.

Best wishes,

Martin

 

[domaingenius]

Thanks guys I appreciate the opinions here.

The site make very little money so yeah, i'd not lose much if I transferred to them, although I'm holding out to see if they'll offer me something first.

Best wishes,

Martin

Yes it always worth a shot to get what is called "go away money" and will be cheaper for them than paying a lawyer. I had one notable similar complaint years ago and it ended up with them (very very large US Corp) issuing Court proceedings in USA against me. Long and short, they still paid me to cave in !! By the way. If anyone on here has a problem domain and is "bottling out" of keeping the domain I will offer to have the domain transferred to myself and will share 50%/50% any sales revenue received . I am good at that type of thing.

DG

 

[Dale Hubbard]

Some companies have in-house lawyers and won't bother with UDRP or DRS proceedings etc. They'll just sue you straight off the bat; perhaps make an example of you. First rule: Know your enemy.

 

[DNQuest.com]

By the way. If anyone on here has a problem domain and is "bottling out" of keeping the domain I will offer to have the domain transferred to myself and will share 50%/50% any sales revenue received . I am good at that type of thing.

DG

You may also want to add.... by doing so, if you really PO the TM holder, they could still come after the original domain owner under the ACPA. This will not make you "free and clear" from the situation.

 

[Fatbat]

In what capacity are you using their trademark? Are you acting as an affiliate of theirs? Without going into details, how close is the domain in question the same as their company name? Is it included in the domain name? Do you have a regional TLD or something?

It's hard to know what kind of case they have against you. Based on what you've said I'd say you might be able to get a few hundred out of them. If it's a clear cut WIPO case, they are looking at $1000 for the arbitration + lawyers fees. If you can save them half of that, then it's a win for them. Keep in mind they could always come after you for damages though. Tread lightly and be cooperative.

 

[doobee]

Why be difficult dude? Oh yah, that quick buck thing!

 

[boz]

...

If it's a clear cut WIPO case, they are looking at $1000 for the arbitration + lawyers fees. If you can save them half of that, then it's a win for them.

IMHO, a company that has spent money trademarking worldwide isn't going to worry about $1000 + lawyers fees. The CEO probably spends more taking a couple of business mates out for a quick lunch.